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Amir Chand Om Parkash v. Rajni Industries .
Factual and Procedural Background
The appellant/plaintiff, the registered proprietor of a device trademark featuring the picture of Lord Hanuman and the word "MAHABIR," filed a suit for injunction against the respondent/defendant alleging infringement of the registered trademark and passing off. The appellant is engaged in selling Dhoopbatti, Agarbatti, and Hawan Samagri. The respondent was using an unregistered trademark "SHRI PANCH MUKHI HUNUMAN" and had ceased using the Lord Hanuman image prior to the suit, substituting it with a mace image. The trial Court dismissed the appellant's injunction application, leading to this first appeal challenging that dismissal.
Legal Issues Presented
- Whether the respondent's use of the trademark "SHRI PANCH MUKHI HANUMAN" along with a device of a mace causes deception or confusion with the appellant's registered trademark "MAHABIR" featuring the Lord Hanuman device.
- Whether the appellant is entitled to an injunction restraining the respondent from using the contested trademark and device.
Arguments of the Parties
Appellant's Arguments
- The appellant heavily relied on the precedent set in Amir Chand Om Parkash v. Monga Perfumery & Floor Mills, where the defendant was restrained from using a similar trademark and label.
- It was contended that the precedent clearly applies and the trial Court erred in dismissing the injunction application.
Court's Response to Arguments
- The Court found the appellant's reliance on the cited precedent misconceived, noting that in that case the marks were prima facie found to be colourable imitations causing confusion.
- In the present case, the Court observed no phonetic or visual deceptive similarity between the appellant’s device mark and the respondent’s trademark.
- The Court emphasized that the appellant’s mark is a device mark to be considered as a whole and found no basis for asserting deceptive similarity with the respondent’s marks.
- The respondent’s use of additional trademarks, such as "T-series" alongside "BHAKTI SAGAR SHRI PANCHMUKHI HANUMAN," further reduces any potential confusion.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Amir Chand Om Parkash v. Monga Perfumery & Floor Mills, 1995 PTC (16) 385 | Establishing injunction where defendant's marks were found to be colourable imitation causing confusion. | The Court distinguished the present case from this precedent, finding no deceptive similarity or colourable imitation in the marks before it. |
Court's Reasoning and Analysis
The Court analyzed the phonetic and visual aspects of the trademarks in question. It noted that the appellant’s trademark "MAHABIR" combined with the Lord Hanuman device was not phonetically or visually similar to the respondent’s "SHRI PANCH MUKHI HANUMAN" with the mace device. The Court emphasized the necessity of deceptive similarity as a prerequisite for granting an injunction in trademark infringement cases. It further considered the nature of the appellant’s mark as a device mark, which must be assessed as a whole rather than by isolated parts. The presence of additional trademarks used by the respondent, such as "T-series," was taken as a factor reducing potential confusion. Ultimately, the Court found no prima facie case for injunction and upheld the trial Court’s dismissal of the injunction application.
Holding and Implications
The appeal is dismissed.
The Court upheld the trial Court’s order dismissing the injunction application, concluding that there was no deceptive similarity warranting restraint on the respondent’s trademark use. The decision directly affects the parties by allowing the respondent to continue using its trademark and device, except for the prior restraint on using the Lord Hanuman device which the respondent had already ceased. No new legal precedent was established by this ruling. The trial Court record is to be returned for further proceedings.
Valmiki J. Mehta, J.
FAO No. 48/2011 and C.M Nos. 2360/2011,2361/2011 and 2364/2011
1. The challenge by means of this first appeal is to the impugned order dated 11.1.2011 passed by the trial Court dismissing the injunction application of the appellant/plaintiff filed in a suit for injunction against violation of a registered trademark device.
2. The facts of the case are that the appellant/plaintiff claims to be the registered proprietor of the device which includes the picture of Lord Hanuman and also uses the word ôMAHABIRö. The suit was filed in the infringement of the registered trademark as also for passing off. The appellant/plaintiff is in the business of selling Dhoopbatti, Agarbatti and Hawan Samagri. The respondent/defendant was using its unregistered trademark ôSHRI PANCH MUKHI HUNUMANö. The defendant/respondent even before filing of the suit had stopped using the picture of Lord Hanuman and was, in fact, using the picture of a mace.
3. The trial Court has dismissed the injunction application by making the following observations:—
“The trademark “MAHABIR” as used by the plaintiff and the trademark “SHRI PANCHMUKHI HANUMAN” as used by the defendant are not phonetically similar. Moreover, the comparison of plaintiffs carton/label and defendant's carton/label shows that the trademark “MAHABIR” along with the device of “LORD HANUMANJI” and of “SHRIPANCHMUKHIHANUMAN” along with the device of “GADDA” does not likely to cause deception or confusion in the minds of the public as to pass off the goods of the defendant as that of the goods of the plaintiff. Accordingly, I am of the opinion that plaintiff has no prima facie case so as to restrain the defendant from using the trademark “SHRI PANCHMUKHI HANUMAN” along with device of “GADDA”. However, as the defendant has contended that they are not using the device “LORD HANUMANJI” on their products prior to the institution of the suit. The defendant is restrained from using the device of “LORD HANUMANJI” in their products namely Dhoopbatti, Agarbatti and Hawan Samagri till the disposal of the suit. Accordingly, the application U/O 39 Rule 1 and 2 CPC is disposed of. Nothing expressed herein shall tantamount to an opinion on the merits of the case.”
4. Learned counsel for the appellant very heavily relies upon a decision of a Single Judge of this Court in the case reported as Amir Chand Om Parkash v. Monga Perfumery & Floor Mills, 1995 PTC (16) 385 wherein the defendant was restrained from using the trademark ‘JAI BAJRANG BALI’ and a similar label. It is contended on behalf of the appellant that the judgment in the case of Amir Chand Om Parkash (supra) clearly applies in the present case also and therefore the trial Court has committed an error in dismissing the injunction application. In my opinion, the reliance placed upon by the counsel for the appellant in the case of Amir Chand Om Parkash is misconceived because in the facts of the said case, the Court came to a conclusion that it prima facie appeared taking both the device marks together that the impugned labels and marks of the defendant were colourable imitation and substantially similar so as to cause confusion in the minds of the purchasers (see para 4 of the citation). In the present case, I do not find any deceptive similarity between the device mark having the picture of Lord Hanuman alongwith the word ‘MAHABIR’ and the trademark of defendant which is ‘SHRI PANCHMUKHI HANUMAN’. There is neither phonetic nor visual similarity so that any deceptive similarity can be asserted. Before the plaintiff/appellant is entitled to injunction, it is necessary that there should be deceptive similarity between marks. Kurt her, the mark of the appellant/plaintiff is a device mark and not a word mark and therefore normally the device will have to be taken as a whole. No doubt, a prominent part of the device mark also “cannot be used by the respondent, however, I do not find any such issue or deceptive similarity between the word mark ‘MAHABIR’ and ‘BHAKTISAGAR SHRI PANCHMUKHI HANUMAN’. Besides using the expression “BHAKTI SAGAR SHRI PANCHMUKHI HANUMAN”, the respondent is also prominently displaying its other trademark viz “T-series” alongwith the expression “BHAKTI SAGAR SHRI PANCHMUKHI HANUMAN” to remove any alleged confusion. The facts of the present case do not prima facie show any scope of the public being deceived.
5. In view of the above, I do not find any illegality or perversity in the impugned judgment which calls for interference by the Court in an appeal. The appeal is accordingly dismissed. Nothing contained in the impugned order will amount to expression on merits of the case. Trial Court record be sent back.
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